Efficiently preparing the negotiation of access rights to a patentable invention Helpline / Success Story

Printer-friendly versionPDF version

BIOCORE a consortium made up of 23 partners pursued an intensive collaborative research, aiming to “conceive and analyse the industrial feasibility of a biorefinery concept that will allow the conversion of cereal by-products (straws etc), forestry residues and short rotation woody crops into a wide spectrum of products.” The project, funded by the 7th Framewok Programme for Research (FP7) ran between March 2010 and February 2014, by which time more than forty research-based publications were added to the academic library.

During the exploitation stage, the stage whereby partners secure their IPR via methods of patent, industrial design, and/or trademark registrations and applications, a dispute between two partners arose regarding a patent application. BIOCORE, therefore, contacted the European IPR-Helpdesk Helpline  to clarify the legal uncertainties at the crux of their disagreement.

The patent application, argued one partner, should be withdrawn on the basis that the invention had been developed using his pre-existing, patented processes without permission and that by filing a patent application for the new process, confidential information would be disclosed. The applications were thus withdrawn.

Knowledge relevant to a collaborative innovation project supplied by the partners to it is known as background. Background knowledge is vital to the creation of the final product of such a collaborative venture, known as foreground. The European IPR-Helpdesk was approached for advice and guidance on the rights and obligations of the parties regarding ownership rights of the respective background and foreground with regard to FP7 projects.  

The IPR Helpdesk drew from the Consortium Agreement that background related to the project was defined by the partners through the use of positive and negative list of assets, and that pre-existing patented invention owned by the partner who opposed the patent applications was indeed available for access rights where it was needed to exploit foreground generated.

A few months later the BIOCORE partners again contacted the Helpline, stating: 

“Following the IPR Helpdesk’s support, the opposed partner has been contacted for discussions.  The situation has been clarified and a new European patent application has been filed. This experience will also help us to better prepare the next projects and Consortium Agreements.”

The project partners are now awaiting the results of the search report of the European Patent Office.  Depending on the results, the opposed partner will be contacted to request access rights to its background and to take further steps related to the commercial exploitation of the project foreground.